ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
1.1 The Complainant, Royal Bank of Canada is a financial institution founded in Canada 1869, which does business in many countries of the world. The Respondent is Bankex International Inc., with its postal address in P.O. Box 1058, Basseterre Region, St. Kitts Nevis. The WHOIS database lists Mr. Kevin Jameson as the domain name administrative, billing and technical contact for the Respondent.
2. Procedural History
2.1 The electronic version of the Complaint form was filed by the Complainant on-line through eResolution's Website on March 14, 2000. Upon receiving all the required information, eResolution's clerk proceeded to: confirm the identity of the Registrar for the contested Domain Name; verify the Registrar's WHOIS Database and confirm all the required contact information for Respondent; verify if the contested Domain Name resolved to an active Web page; and verify if the Complaint was administratively compliant.
2.2 The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is the Internet Council of Registrars ("Core"), the WHOIS database contains all the required contact information but the billing contact. An email was sent to email@example.com by eResolution clerk's office to confirm the name of the billing contact on March 16, 2000. The requested information was received by eResolution on March 17, 2000. The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on March 20, 2000. That date is the commencement date of the administrative proceeding.
2.3 On March 20, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. On April 3, 2000, the Clerk's Office received a letter from Joseph R. R. Escher, Director of Fidesco Trust Corporation indicating that it had received the correspondence intended for the Respondent. Mr. Escher asserted that there is no Kevin Jameson or Bankex International Inc. at his address, and that after consultation with the Registrar of Companies, there is no such company on the Registrar of Companies in his jurisdiction.
2.4 On April 13, 2000, The Clerk's Office still had not received a Response form from the Respondent. On April 13, 2000, the Clerk's Office contacted Mr. Mark Warner, and requested for him to act as panelist in this case. On the same day, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On April 17, 2000, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 1, 2000.
2.5 In the paragraph 7(2) of the Complaint, the Complaint agreed it would submit, "with respect to any challenges to a decision in this administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction" (as that term is defined in the Uniform Domain Name Dispute Resolution Policy (the "Policy"). On April 26, 2000 after consultation with the Clerk's Office and in accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant agreed to submit, with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts of the principal office of the Registrar. The Rules define Registrar as "the entity with which the Respondent [i.e., the holder of a domain-name registration against which a complaint is initiated] has registered a domain name that is the subject of a complaint." The Registration Agreement ("Agreement") signed by the Respondent provides that CORE is the Registrar. In paragraph 10 of the Agreement, the Respondent agreed that its rights and obligations and all actions contemplated by Agreement would be governed by the laws of Switzerland, and any action to enforce the Agreement or any matter relating to its use of the CORE site would be brought exclusively in the courts of Switzerland located in Geneva. The Clerk's Office attempted to provide notice of the April 26th submission by the Complainant. Again, no Response was received from the Respondent.
2.6 On May 2, 2000, I informed the Clerk's Office that in accordance with Rule 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and 3(a) of the Supplemental Rules of the Disputes.org/eResolution Consortium (the "Supplemental Rules"), I had exercised my own discretion to extend my time limit for rendering a decision as I considered such an extension necessary for me to be able to fulfil my duties adequately.
3. Factual Background
3.1 The trademark ROYAL BANK OF CANADA is registered in the name of Royal Bank of Canada in twenty-four (24) countries of the world (Argentina, Australia, Barbados, Canada, Cayman Islands, Colombia, Germany, Guersney, Hong Kong, Ireland, Japan, Jersey, Korea, Malaya, Mexico, New Zealand, Puerto Rico, Sabah, Sarawak, Singapore, Spain, Switzerland, United States and United Kingdom). Royal Bank of Canada also does business under BANQUE ROYALE DU CANADA which is the French version of the trademark ROYAL BANK OF CANADA. The trademark ROYAL BANK is registered in the name of Royal Bank of Canada in seven (7) countries of the world (Argentina, Bahamas, Barbados, Canada, Indonesia, Puerto Rico and United States). The French version BANQUE ROYALE is registered in Canada. The trademark ROYAL is registered in the name of Royal Bank of Canada in twenty-seven (27) countries of the world (Antigua, Aruba, Australia, Benelux, Bermuda, Bolivia, Brazil, Canada, Chile, Colombia, Denmark, Dominica, Dominican Republic, Ecuador, Haiti, Honduras, Lebanon, Monserrat, Netherlands Antilles, Panama, Philippines, Portugal, South Africa, Spain, St. Kitts, St. Lucia and Venezuela).
4. Parties' Contentions
4.1 The Complainant contends that by virtue of these registrations, Royal Bank of Canada has the exclusive right to use the said trademarks in the countries where the trademarks are registered. The Complainant further contends that as a result of extensive use in Canada and abroad, the trademarks ROYAL BANK OF CANADA, ROYAL BANK and ROYAL, when used in association with financial services, have become well-known trademarks associated exclusively to Royal Bank of Canada in the countries where the trademarks are registered.
4.2 The Complainant states that the domain name "royalebankonline.com" is confusingly similar to the trademarks ROYAL BANK and ROYAL BANK OF CANADA which trademarks have been extensively used by Royal Bank of Canada and are registered in many countries of the world. In particular, the Complainant states that the domain name royalebankonline.com is confusingly similar since its distinctive portion is composed of the well-known trademark ROYAL BANK, the word "online" being clearly descriptive. The Complainant states that confusion has actually arisen as a result of the receipt by many persons of emails in relation to instaprizes to be won from the instalotto.net web site where the following mention appeared "Sponsor : royalebankonline.com". Following the receipt of those emails, the Complainant states that it has been asked by many persons whether it was sponsoring the activities of instalotto.net. Accordingly, the Complainant argues that any use of the domain name royalebankonline.com by a person other than Royal Bank of Canada will inevitably cause confusion (and has already caused confusion), in that people familiar with Royal Bank of Canada will naturally expect that this domain name is used by or under the authority of Royal Bank of Canada.
4.3 The Complainant states that the Registrant has no rights or legitimate interests in the domain name royalebankonline.com because ROYAL BANK OF CANADA and ROYAL BANK are well-known trademarks of Royal Bank of Canada which have acquired an enviable reputation and are registered in many countries of the world, and the trademark BANQUE ROYALE is registered in Canada. The Complainant states that the Registrant: has not made any good faith use of the domain name royalebankonline.com; is not making any legitimate non commercial or fair use of the said domain name; nor has the Registrant ever developed any legitimate goodwill in association with the said domain name. The Complainant further states that, it is not possible to conceive any plausible actual or contemplated active use of the said domain name by the Respondent, in Canada in particular and other countries of the world, that would not be illegitimate, such as not constituting passing off or infringement of Royal Bank of Canada's trademarks.
4.4 Finally, the Complainant, relying on the facts set out in paragraph 4.2 above, states that the domain name royalebankonline.com has been registered and used by the Registrant in bad faith. The Complainant alleges that by using the domain name royalebankonline.com, the Registrant is intentionally attempting to attract, for commercial gain, internet users to the web site of installoto.net by creating confusion with the trademarks of Royal Bank of Canada as to the sponsorship or endorsement of the activities found on said web site. The Complainant states that such activities found on the web site of instalotto.net create grave prejudice to Royal Bank of Canada as Royal Bank of Canada is associated to activities which are illegal in Canada as being contrary to the Canadian Criminal because gaming and betting is, as a general rule, prohibited in Canada pursuant to Section 206 the Criminal Code of Canada, C.S.C. c. C-46 ("Code"). The Complainant further alleges that the Respondent, the operator of the web site instalotto.net nor Royal Bank of Canada do not fall within the limited exceptions set forth in Section 207 of the Code authorizing a very limited number of organizations to conduct and manage certain gaming and betting activities which are defined as "lottery schemes" pursuant to section 207(4) of the Code.
4.5 The Respondent has not replied to any of the allegations made by the Complainant.
5. Discussion and Findings
5.1 Paragraph 1 of the Rules, makes it clear that the ICANN Policy is incorporated in each Registration Statement by reference and that the Registrant is considered to know its contents. Paragraph 4 of the ICANN Policy further states that a Registrant is bound by this Policy and that disputes between the Registrant and a third party over a domain name must be resolved by the system of arbitration conducted under the ICANN Rules called a "mandatory administrative proceeding". Other panels have had to address the situation when the Respondent is in default. In this regard, I agree with the statement of the Lead Arbitrator, Maurice Wolf in Noodle Time, Inc. v. Max Marketing, Case AF-0100 that:
"[t]he ICANN Policy was adopted in order to ensure that disputes arising from domain names could be resolved in an efficient manner equitable to the parties to the dispute. Such parties are given the opportunity to present evidence to an independent and impartial arbitrator to support the claims made by the Complainant, on the one hand and for the Respondent, on the other, to demonstrate that the use of the disputed domain name is proper and in accordance with the ICANN Policy. . . . Of course, when one party to such a dispute fails to abide by the ICANN Rules and does not submit a response to the Complaint, it is difficult for any arbitrator to view the merits of the case from the perspective of the Respondent and must rely on the statements and evidence submitted by the Complainant and the provisions of the ICANN Policy applicable to these facts." [See paragraph 5 of the decision.]
5.2 Paragraph 14(2) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules the Panel shall draw such inferences therefrom as it considers appropriate. In Noodle Time, Inc. v. Max Marketing, Arbitrator Wolf held that:
"[t]he arbitrator may properly draw an inference that the failure of the Respondent to answer the claims of the Respondent should be considered as an admission that such claims are true.[Paragraph 14 of the ICANN Rules] Accordingly, if the Complainant's claim includes sufficient credible evidence that the Respondent has violated the ICANN Policy, the arbitrator must find for the Complainant and order the appropriate action taken with respect to the registration of the disputed domain name. This, it is to be noted, is not a default award but an award based on the evidence before the Panel which is unrefuted." [See paragraph 5 of the decision.]
5.3 Paragraph 4(a) of the Policy requires the Complainant to demonstrate that three elements of a case are present for either cancellation or transfer of the disputed domain name. These are that: the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name, and the domain name was registered and is being used in bad faith. The question before this Panel, therefore, is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved.
5.4 The Complainant has demonstrated that it has trademarks in the English language phrases ROYAL BANK and ROYAL BANK OF CANADA in a number of jurisdictions, and the French language phrase BANQUE ROYALE in Canada. The Complainant has not demonstrated that it possesses a trademark to the French language phrase ROYALE BANQUE or ROYALE BANQUE DU CANADA anywhere in the world. The threshold question, therefore, is whether the domain name "royalebanque.com" is identical or confusingly similar to the trademarks owned by the Complainant. I find that the domain name is confusingly similar to the trademarks of the Complainant.
5.5 I note also that in Stella D'oro Biscuit Co., Inc. v. The Patron Group, Inc. Case No. D2000-0012, the Panel found that the domain name "stelladoro.com" was identical to the Complainant's trademarks to the Italian phrase "STELLA D'ORO". In that case, the Panel noted that each trademark registration notes that the English language translation of "Stella d'Oro" is "Star of Gold." In this case, I do not need to determine the question of the identity of the phrases because the Complainant has alleged only confusing similarity. Nonetheless, I find that the addition of the "e" in "royalebankonline.com" is substantially the same as the omission of the apostrophe in "stelladoro.com". Therefore, I find that the Complainant has demonstrated confusing similarity. Along the lines of the Panel in Stella D'oro Biscuit Co., Inc. v. The Patron Group, Inc., I find that the fact the Complainant's own translation for ROYAL BANK in French is BANQUE ROYALE not ROYALE BANQUE does not detract from the confusing similarity of the domain name. See also The British Broadcasting Corporation v. Jaime Renteria Case No. D2000-0050 where the Panel found the Respondent's use of the domain names in Spanish "bbcdelondres.com", "bbcenespanol.com" "bbcenespanol.net" "bbcenespanol.org" were confusingly similar to the Complainant's trademark "BBC".
5.6 With respect to the question whether the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the domain name, I find that the Complainant has met its burden of proof. I consider it appropriate to draw an adverse inference from the Respondent's failure to reply to the Complaint and to articulate its rights or legitimate interests in the domain name "royalebankonline..com". The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a right to or legitimate interest in these domain names. Accordingly, I accept the statements of the Complainant that the Respondent has no such rights or interest.
5.7 With respect to the question whether the domain name was registered and is being used in bad faith, I find that the Complainant has met its burden of proof. Paragraph 4 of the Policy provides a non-exhaustive list of circumstances that "shall be evidence of registration and use of a domain name in bad faith". In particular, paragraph 4(b)(iv) provides this circumstance of bad faith: "by using the domain name, [a registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location." I find that the Complainant has demonstrated that the Respondent by registering and using the domain name "royalebankonline.com", the Registrant is intentionally attempting to attract, for commercial gain, internet users to the web site of installoto.net by creating confusion with the trademarks of Royal Bank of Canada. I further find that in doing so, the Respondent has created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location. Given the Complainant's allegations that the sponsorship or endorsement of the activities found on said web site of instalotto.net create grave prejudice to Royal Bank of Canada as Royal Bank of Canada is associated to activities which are, or could be, illegal in Canada, I consider it appropriate to draw an adverse inference from the Respondent's failure to reply to the Complaint on this point.
6.1 For the reasons given above, the Complainant's request is granted and, in accordance with Paragraph 3(c) of the Policy, the Panel orders the domain name of royalebankonline.com to be transferred to the Complainant.
This decision of the Administrative Panel in Case No. AF-0150 was rendered in Paris on the 2nd of May, 2000.
(s) Mark A. A. Warner, Esq.